FEDERAL COURT OF AUSTRALIA
StarTrack Express Pty Ltd v TMA Australia Pty Ltd [2023] FCAFC 200
Appeal from: StarTrack Express Pty Ltd v TMA Australia Pty Ltd [2023] FCA 1271 File number(s): VID 925 of 2023 Judgment of: O’CALLAGHAN, STEWART AND BUTTON JJ Date of judgment: 30 November 2023 Date of publication of reasons: 15 December 2023 Catchwords: INJUNCTIONS – application for interlocutory injunction – where application refused by primary judge – whether prime facie case of contraventions of ss 18 and 29 of the Australian Consumer Law and for tort of passing off – whether balance of convenience favoured grant of interlocutory injunction – appeal allowed Legislation: Competition and Consumer Act 2010 (Cth) sch 2, ss 18, 29 Cases cited: Australian Broadcasting Corporation v O’Neill (2006) 227 CLR 57
Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2013) 250 CLR 640
Bullock v Federated Furnishing Trades Society of Australia (No 1) (1985) 5 FCR 464
GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Ltd [2013] FCAFC 102; (2013) 305 ALR 363
House v The King (1936) 55 CLR 499
Samsung Electronics Company Ltd v Apple Inc (2011) 217 FCR 238
Shercliff v Engadine Acceptance Corporation Pty Ltd [1978] 1 NSWLR 729
StarTrack Express Pty Ltd v TMA Australia Pty Ltd [2023] FCA 1271
Verrochi v Direct Chemist Outlet Pty Ltd (2016) 247 FCR 570
Warner-Lambert Co LLC v Apotex Pty Ltd [2014] FCAFC 59: (2014) 311 ALR 632
Division: General Division Registry: Victoria National Practice Area: Commercial and Corporations Sub-area: Commercial Contracts, Banking, Finance and Insurance Number of paragraphs: 83 Date of hearing: 30 November 2023 Counsel for the Appellant: HNG Austin KC with AN McRobert and L O’Rorke Solicitor for the Appellant: Lander and Rogers Counsel for the Respondent: P Wallis KC with L Davis Solicitor for the Respondent: K&L Gates ORDERS
VID 925 of 2023 BETWEEN: STARTRACK EXPRESS PTY LTD
Appellant
AND: TMA AUSTRALIA PTY LTD
Respondent
ORDER MADE BY:
O’CALLAGHAN, STEWART AND BUTTON JJ
DATE OF ORDER:
30 NOVEMBER 2023
THE COURT NOTES THAT:
A.The appellant gives the usual undertaking as to damages in the form set out in the Usual Undertaking as to Damages Practice Note (GPN-UNDR).
THE COURT ORDERS THAT:
1.The appellant have leave to appeal and to file an amended notice of appeal in the form of the draft notice provided to the Court this day.
2.The appeal be allowed.
3.Order 1 of the orders made on 23 October 2023 be set aside.
4.In lieu thereof, there be an order in proceeding VID 822 of 2023 that:
Pursuant to ss 19 and 23 of the Federal Court of Australia Act 1976 (Cth), that until the hearing and determination of the proceeding or until further order, the respondent:
a.be restrained from using and/or publishing any domain name that includes “Startrack”; and
b.be restrained from sending any email or “electronic direct mail” to any person, which uses the word “Startrack” and which represents that the respondent or its business is…
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- Case
- [2023] FCAFC 200
- Decision Date
CaseChat Overview and Summary
The legal issues central to the appeal revolved around the assessment of the strength of StarTrack's prima facie case regarding the alleged consumer law contraventions and the tort of passing off. The court was tasked with determining whether the primary judge had erred in his evaluation of the evidence and whether the balance of convenience favoured the grant of an interlocutory injunction. StarTrack contended that the primary judge had misconstrued the significance of certain facts and failed to apply the appropriate legal principles, which warranted a re-exercise of the discretion concerning the injunction.
The appellate court found that the primary judge had indeed erred in his assessment of StarTrack's prima facie case. The court identified specific instances where the primary judge had misapprehended the evidence, such as the timing of the appearance of a pop-up message on the repurposed platform and the percentage of customers who opened TMA's promotional email. Additionally, the court noted that the primary judge had overlooked critical evidence concerning the internet architecture that directed users to the repurposed platform when searching for StarTrack packaging. The appellate court concluded that the primary judge's characterisation of StarTrack's prima facie case as weak was incorrect and that the case was, in fact, sufficiently strong. Consequently, the appeal was allowed, and the injunction order was set aside in favour of a new order that restrained TMA from using certain domain names and from sending emails that misrepresented their association with StarTrack.
The final orders of the court granted StarTrack leave to appeal, set aside the previous injunction order, and issued a new order restraining TMA from using specific domain names and misleading communications regarding their association with StarTrack until the matter was resolved. The court reserved questions relating to costs for further consideration.
Orders
Orders of the court
1. The appellant have leave to appeal and to file an amended notice of appeal in the form of the draft notice provided to the Court this day.
2. The appeal be allowed.
3. Order 1 of the orders made on 23 October 2023 be set aside.
4. In lieu thereof, there be an order in proceeding VID 822 of 2023 that:
Pursuant to ss 19 and 23 of the Federal Court of Australia Act 1976 (Cth), that until the hearing and determination of the proceeding or until further order, the respondent:
a. be restrained from using and/or publishing any domain name that includes “Startrack”; and
b. be restrained from sending any email or “electronic direct mail” to any person, which uses the word “Startrack” and which represents that the respondent or its business is associated with the appellant.
5. Any questions in relation to costs be reserved.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
An example of a case where discretion may miscarry is where a judge erred in rejecting important aspects of evidence relied upon. See Shercliff at 734. Consideration Grounds 1-4 StarTrack submitted that the learned primary judge at least mistook the significance of the facts in three critical respects. First, it was submitted that the judge, in concluding that the risk that users might arrive at the ST Portal thinking they had accessed a StarTrack website, or a website associated with StarTrack, was “effectively addressed” by the pop-up (“TMA no longer has any commercial relationship with StarTrack and TMA”) failed to appreciate that the pop-up appeared only after a customer, using the login details previously issued to StarTrack customers, had logged in. It was submitted that the primary judge thus erred by not considering the effect of the impugned conduct prior to any member of the relevant class of consumer seeing the pop-up. Secondly, it was submitted that the primary judge did not appreciate or understand the significance of the evidence that, on TMA’s own evidence, only 22.6% of people opened the TMA Promotional Email. Thirdly, it was submitted that the primary judge did not refer to critical evidence that the Google search results for StarTrack packaging take the user to “hits” involving the ST Portal – that is, through what counsel called “the architecture of the internet”, the inclusion of “startrack” in the StarTrack URL resulted in the user being driven to the ST Portal by searching for the StarTrack name on the Google search engine. It was submitted that his Honour thus erred in finding that there was a “very low” risk that users might arrive at the ST Portal thinking that they had accessed a StarTrack website (or a website otherwise associated in some way with StarTrack); and that he ought to have found that there was significant, not a very low, risk of that type. StarTrack submitted that the primary judge was wrong to regard its prima facie case as weak. Before his Honour, StarTrack submitted that its prima facie case was a strong one. That submission was made in the context of the principles we have set out at paragraph [54] above concerning the interrelationship between the strength of an applicant’s prima facie case and its position on the balance of convenience. It was only in respect of the contractual claims based on the restraint clause – with which we are not concerned – that StarTrack put its submissions on the strength of its prima facie case on the basis that the interlocutory relief it sought was tantamount to final relief, given that the restraint clause would likely have expired before trial. The conclusions we set out below concerning the strength of StarTrack’s prima facie case in respect of its ACL and passing off case are to be understood in this context. While StarTrack maintained that it did not need to show that its prima facie case was a strong one – although it contended that it was – it submitted that the primary judge was wrong to regard the prima facie case as weak. StarTrack contended that the primary judge ought to have found that there was a sufficiently strong prima facie case that ordinary and reasonable members of the class of persons who arrived at the ST Portal would think they have arrived at a StarTrack website or a website otherwise associated in some way with StarTrack, having regard to that evidence.